Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed 07/13/2026 have been fully considered. Although Applicant’s argument is found to be persuasive that the specification’s detail regarding Principal Component Analysis (PCA) in [0046] satisfies the 35 USC § 112(a) written description requirement for claiming “encoding, using a statistical analysis”, Applicant’s argument that the specification in [0008] satisfies 35 USC § 112(a) requirement for claiming “encoding, using … a neural network, the first audio dataset to output a first plurality of basis functions” is not found to be persuasive.
[0008] in the specification merely expresses a use scenario for auto encoders -- “Using …neural network-network based architectures, such as … auto encoders” to decompose audio data. This functional language describing a desired result without any accompanying detail as to how the function is performed or how the result is accomplished fails to satisfy 35 USC § 112(a) requirement to prove that the inventor had possession of the invention as claimed including this feature. As explained in the Final Rejection on p. 3, citing support in Ariad Pharms., Inc. v. Eli Lilly & Co., a “claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved”. This is held to be the case in the pending claims regarding the use of neural networks such as auto encoders for encoding the claimed audio dataset. For this reason, claims 1-21 remain rejected under 35 USC § 112(a).
It is recommended to amend “encode(ing), using a statistical analysis or a neural network” in each of claims 1, 8 and 15 to ---encode(ing), using a statistical analysis--- to confine the claims to subject matter that is fully supported by the specification.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The limitation of “encoding, using a statistical analysis or a neural network, the first audio dataset to output a first plurality of basis functions”, see claims 1, 8 and 15, fails to meet the 35 U.S.C. 112(a) requirement for written description support. The specification in [0008] merely recites “Using …neural network-network based architectures, such as … auto encoders, the set of basis functions, such as a set of signals, are decomposed and used to build more complex sounds.” without providing any technical details as to how auto encoders are used to achieve the end result.
MPEP 2163.03(v) cites Ariad Pharms., Inc. v. Eli Lilly & Co. as evidence that, “An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved” (emphasis added). This section also cites Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002) as evidence that, “The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement."
The mere mention in [0008] of the specification of a desire to use auto encoders to decompose signals to build complex sounds without any further detail as to how this technique is applied is insufficient written description for the claim limitations at-issue.
Taking into consideration the level of ordinary skill in the art, the complexity of the art, and the criticality of the claimed feature to the practice of the invention, it is determined that there is insufficient support in the specification to conclude that Applicant had possession of the invention including the claimed encoding, using neural networks, of audio datasets to output basis functions as of the effective filing date. Mere mention of a desire to apply some undisclosed use of the technology of auto encoders, in general, for processing data to accomplish a new claimed end result is insufficient to prove the inventor had possession of the invention configured to accomplish the end result.
As an example of what would be considered sufficient written description to claim the use of neural networks for audio processing, see US 10,068,557 B1 to Engel et al. The specification of Engl goes into detail as to how an encoder neural network receives input, what type of input it receives, how the encoder neural network is structured (a stack of non-causal convolutional layers), how the encoder neural network operates (embedding certain information such as pitch information, upsampling processes, etc.), how the encoder neural network is trained (on a particular loss function which can be backpropagated through a decoder neural network and continue through an encoder neural network). This sort of detail stands in contrast to the instant disclosure that merely contemplates fields of use of neural networks.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN J HYLINSKI whose telephone number is (571)270-1995. The examiner can normally be reached Mon-Fri 10-530.
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/STEVEN J HYLINSKI/Primary Examiner, Art Unit 3715
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